Posted
by
kdawsonon Sunday January 04, 2009 @05:23AM
from the thanks-for-the-research dept.

theodp writes "Working as a NASA intern, grad student Erez Lieberman had a eureka moment, resulting in an algorithm that detects whether a person is standing correctly or is off balance. Unfortunately, MIT liked it so much they decided to patent it. Seeking permission to use his own idea for his iShoe startup, which develops products like insoles to address the problems of seniors, Lieberman was told no problem — as long as he promised a hefty royalty and forked over a $75,000 upfront payment. Whether or not students are aware of it, the NYTimes reports that most universities own inventions created by students that were developed using a 'significant' amount of schools resources. Colleges and universities once obtained fewer than 250 patents a year, but that was before the Bayh-Dole Act gave them ownership of inventions developed through federally financed research. Now they acquire about 3,000 a year, and in 2006 licensing fees and equity in spinoff companies totaled at least $45B — research powerhouses like Stanford and NYU pocketed $61M and $157M, respectively."

Perhaps a non-profit should step in or be formed to provide resources to students to develop their ideas, and only ask for the student to pay back expenses + 1-5% if their idea strikes gold. Perfect? Hardly. But it's a great starting point. You hear that Bill Gates/Warren Buffet? Fund this idea! Throw a cool mil into the pot to see where it goes. My price is a beer over lunch =)

If these are being funded by Federal dollars, than it should look carefully at how these are administered. In particular, part of the earnings should go back to the feds. But, also, I wonder wether the feds can say we allow the university TRUE LIMITED TIMES with these. The idea of patents and copyrights (as laid out by forefathers) was to give ppl LIMITED time to build businesses off these, make some money and then allow the idea to revert to the COMMONWEALTH. That is, into public space. Now, congress has changed it so that the patent is the money maker.

In Australian Universities (at least the one I work for anyway), students retain all IP rights to any research they conduct. As staff though, we get no rights for anything we come up with. Well, it used to be that way until one professor who developed a new way to treat liver cancer challenged the University he worked for. The judege ruled in his favour stating that there is no contractual 'duty to invent'. Here's the story if anyone is interested...

Well they should've read the IP document they signed when they took the funding, then.

Most institutions will try to take ideas whether or not funding was provided. They will try to use the excuse that you "used the institution's facilities" to work on your project. Isn't that what my tuition paid for?

look over any paperwork for any class/university before signing it. if there is anything about inventions, works of art, essays, etc becoming university property, refuse to sign until the contract is amended. if they will not do it, vote with your dollars and promise bad publicity (there's no need for libel or slander when the truth is this ugly).

ianal, but i would assume that a university claiming rights to someone's work without a written agreement would not be viewed too positively in any court.

We should be careful here. The system may be best left as is. The idea is that:

most universities own inventions created by students that were developed using a 'significant' amount of schools resources.

This is to protect universities against people taking 99% of the university's idea/invention, adding 1%, and then using the university's research to make money while the university keeps begging for donations. Some universities may be fine monetarily, but some need all the money they can get to keep up their standards.

Onto this case. Perhaps MIT & NASA already had the equipment and a similar algorithm that Lieberman simply added an elegant flourish to. If that's the case, he should get some joint arrangement going, but he shouldn't be allowed to pass it off as if he developed the entire thing himself. But what it actually sounds more like, is they both sides significantly contributed, which makes things difficult.

He can try to prove that the university's contribution to the project was "insignificant", but that's going to be a hard sell. If I were him, I'd see what friends I still have in the MIT bureaucracy, see what they can do, and then (while trying to not to ostrichsize them) try to get as much media attention as possible so that MIT can make a good-will announcement that they're giving him the rights.

While I agree that the terms that most Intellectual Property Offices (IPOs) offer are rapacious, the benefits of having someone else invest $300K to secure worldwide patent rights also have to be considered. Particularly, if that institution has big pockets and hence some bloodthirsty lawyes only too happy to sue a big multinational for patent infringement. On the other hand, if you are a little company, a large company might just ignore your patent because patent litigation tends to be a civil affair, which means it'll cost you a lot of money to defend. Money you may not have, forcing you to settle. Never mind the many ways in which the process can get perverted by lawyers.

I think a bigger issue for most IPOs is that they are run as cost centers. Thus, the terms tend to be rapacious by design (i.e. kill what you can today rather than take a longer-term view by taking just an equity stake). However, that state of affairs is unlikely to change since Universities appear to have become addicted to licensing fees and up-front charges generated by their IPOs just as cities have become dependent on "traffic enforcement" revenues. At the end of the day, it simply means that smart students will be much more circumspect in terms of what they disclose to the university. However, I imagine that industry is also sponsoring less and less research since they'd have to share patents/licensing fees/etc.

So, in the end, this obsession with licensing fees and patents will reduce innovation, not enhance it. Never mind the many mechanics involved in pacing an idea through the IPO...

It's the same with employment. Hell, ages ago I had a packing job. It was brain dead work that just got me some money to get by in my youth. I still had to sign something that said if I invent something within the company or with their resources then they own it.

I can see why a university thinks it should get ownership. You paid for the education and you're getting an education. Creating something new isn't necessarily part of that process and you may not have been able to do it without their resources.

Either way the patent should belong to both the student and the university. It was a combination of their resources / talent to get the patent so they should both reap the rewards.

Easy solution - go to EU. The patent as described is a pure software patent and would be invalid outside US (and Japan). Way to squash innovation, US.:P

You forgot sell to EU. The US and every country getting on board with "our" (not mine) IP laws makes it a crime to sell that program in the US, because the patent is still valid here.

This is what the Gates Foundation is about - they are not there to cure disease. It's easy to see that not every country is going to let them in to vaccinate, because you have to basically adopt US IP law (esp. regarding patents - this is about big pharma) to get the vaccinations.

Canada is rapidly coming on board as well, although I've certainly never heard from a Canadian who thinks that our IP law is sensible. And the fight is beginning to heat up over which parts of Central & South America will get in line.

I would say when you apply inappropriate policy, then you are applying stupidy... but yes, I agree that many universities (and many large organisations) may apply stupidity through their often outdated or naively applied choice of policies.

The process is that someone with great power and possibly little foresight, creates a policy that can be in effect for twenty-five years, or more. During the policy's lifespan, many changes to culture and student life, the economy -- impact changes -- will cause each policy to be less effective, exponentially, as time passes. Some policies will become oppressive, others impotent.

Policies are most effective within the first year of their life.

Lazy university-employed Autocrats will during the lifespan of a policy, apply said policy for the sole purpose to reduce their effort required for them to collect a paycheck. As time passes, the degree of laziness of autocrats increases and so does the size of their paycheck. The life of an autocrat is not too unlike the life of a virus.

Good policies will unleash students, faculty and support staff, rather than bind them to regulations for the sake of the binding. The binding is UNIMPORTANT, yet many autocrats will adhere to rules for the sake of being bound to them. That is a lie.

Therefore I would have to reinforce that most policies are nothing more than exerted stupidity, and should be abolished, unless mandated change stipulations exist that cannot be abused by the fat, overpaid, stupid autocrats.

Policies should be about what can be done, and not what cannot be done. Therefore when some policy doesn't say that something can be done, some level of thinking is required by the student and support staff, to come to a satisfactory outcome.

...is because it shows up on their balance sheets. Investors like it because instead of R&D being a cost to a company, it now becomes a profit center because R&D creates "IP", much like a shovel and pick create/discover "minerals" that can be sold or exploited.

Never mind that IP is nothing like actual property; they'll keep passing more laws to make an idea seem more like a thing for investment purposes.

Plus, then IP shows up in GDP, can be bought and sold, and "creates wealth". Never mind that it's the equivalent of eating your seed corn to lock away knowlege, the human condition always values being satisfied now versus building for the future.

Arguing that the university is owed a debt for providing resources to students, is like arguing that the owner of Menlo Park should reap a percentage of Edison's rewards, even though rent was paid for those labs.

I could see if the arrangement wasn't one of default methodology. The university establishes a de facto toe-hold over patents, and gets paid for it. But that kind of exploitation is against the morality of education and must be rejected by educators. Or we have nothing but a society of pyramid schemers.

The thing that really gets me is that universities also patent work that is supported with public funds. So you pay your taxes, the government gives a chunk to the NSF, the NSF gives you a grant, you invent something with that money, then the university lays claim on it. That invention rightfully belongs to the public. I guess the feds allow this under the mistaken belief that "without a patent no innovation would happen".

When I wrote grants to the NSF, I always put a clause in there that said I would release all software I develop for the grant under an open source license in order to share the discovery. It happened that I worked at William and Mary which had a pretty reasonable approach to IP, but places like the University of Virginia have patent foundations and scholars have an obligation to disclose patentable discoveries. I would have loved to see a judge untangle the knot of IP that was developed under the promise of open source distribution versus the claim the university makes on it.

This crap will hurt the schools in the long run. Instead of being able to pickup a patent here and there. People will work hard to keep their ideas secret until they are free and clear of the schools influence. And the schools get NOTHING.

While in this particular case I'd agree, in general I don't.

The reality is most people who come up with good ideas in school end up never trying to make a profit out of them.

In both universities I've attended, if a professor does some work that the university patents, then he gets a cut of any profits, and none of the loss. The article said 1/3, I recall it being more like 1/6. That is a damn good deal. This way, the professor gets free money while still doing the job he loves. Of course, they still have the option to keep it secret and begin a startup - and some have. Most regret that path: It takes them away from the love of their life. With the former solution, they get the best of both worlds - they don't have to waste time with red tape and management. And in both scenarios, the likelihood of becoming filthy rich is low - the former because they only get a small cut - the latter because most faculty don't have what it takes to run a successful corporate enterprise.

Judging from the comments here, this may come as a shock to many of you, but the above is used as an incentive to become a faculty worker - because the most common alternative is working in a company where you get 0% of the profits of any patent resulting from your work.

If this is the same deal that students get, then it is a damn good deal.

So as I said, if the student is fairly sure he wants to go the route of a startup - keep it hidden. If not, he's very likely going to miss out on some good free money.

Drug and genetic companies set up R&D as an investment precisely because they expect patents and IP to come of it. They've shown the rest of the investment community the way to make money is to get out there, find something, write a general patent and then sue everybody else to oblivion.

And your assertion about IP actually helping innovation is the theory which has been disproved over the past 10 years. The biggest innovations in the last 25 years have not come about as a result of IP and IP protection, rather they've come about because people share their knowledge.

You fail at trying to brainwash people. You're probably an awful lawyer, too.

Haven't read the thread yet, but as I recall from accounts of back in the day, Paul Allen wrote the 8080 emulator on Harvard's DEC PDP, and Bill Gates tested his Basic interpreter on it. That's as close to significant usage of university resources for an idea as you're going to get.

The Bayh-Dole act should be repealed ASAP. Creations federally funded belong to the taxpayers. I can see that everything funded would not immediately become public domain, but should after a 17 year period equivalent to patent protection. Also a licensing percentage could be given to the university if the idea were licensed and royalties paid.

Also, the individuals/corporation involved in developing the federally funded work shouldn't have to pay up front fees to to license it, nor be able to transfer to another entity if they do license it. Up front requirements is for the good of the university in this case, but when taxpayer funded we seek the good for all of us, staring with encouraging the creators of ideas like this rather than rewarding the wealthy able to buy it.

With universities demanding more and more in tuition and tax funding, any IP that they obtain or create should be public domain just as with anything the government creates.

Patenting student ideas and then profiting off them is wrong. At most, a university should get a royalty free license IF the student patents one of his or her own ideas.

All this is going to do is encourage brilliant students to CONCEAL any marketable ideas they come up with while in school and thus is actually counter productive. I know that if I were in the same situation, I'd keep such an idea to myself and then "discover" it after I graduated.

No public funding for universities that register patents for profit instead of public domain. Let them choose one or the other.